Trademark infringement cases are becoming more and more frequent in the Intellectual Property Chamber of the Supreme Court of the Republic of Belarus, which started operating in March 2000. This Chamber is the only court in Belarus empowered to consider disputes relating to intellectual property, irrespective of the subject and parties involved. And as of 2012, patent attorneys have been entitled to represent clients there. The Chamber’s decisions come into force immediately after their announcement and are not subject to appeal. They may be reviewed only by way of supervision, upon protests of higher officials of the Supreme Court or the Prosecutor’s Office.
According to Article 20.1 of the Belarusian Trademark Law, use of a trademark on the Internet (including domain names) by the owner of the trademark or by any person to whom the right to use the trademark has been granted shall be deemed to constitute use of the trademark. In case of unlawful trademark use the Belarusian Trademark Law provides for such traditional remedies as injunction and compensation for damages.
More than 36,000 domains were registered with a .BY domain name in 2013. Belarus has taken a leading position in national Internet segment development. There are 5 domain registrars, and it is possible to check a domain name’s availability at each registrar’s site.
Domain names are not protected as intellectual property in Belarus. Information about the owner of the infringing domain can be obtained via Whois service. And although some domain owners choose to have their identities concealed, Whois provides allows for messages to be sent to them. This option helps trademark owners forward cease and desist letters. And from our experience we know that unauthorized trademark users who receive such messages often choose to assign infringing domain names to legitimate trademark owners.
Domains with a .BY domain name have already been involved in several court cases. One of the published decisions regarded the domain “kosht.by”. The plaintiff in the case was the owner of the trademark for services of class 35 of the International Classification of Goods and Services. The defendant, a Belarusian natural person, had registered the domain name “kosht.by” in his name before the date of trademark registration, however – and had himself applied to trademark the name “kosht.by” for the services of class 43 of the International Classification of Goods and Services. The defendant was using the “kosht.by” domain name on the Internet as an additional domain name for the sites sushi.by and pizza.by that offered food delivery services (mainly sushi and pizzas). When the action was filed and the defendant learned there was a case against him, however, the kosht.by site was deleted.
Nonetheless, the plaintiff asked the court to prohibit the defendant’s use of the domain kosht.by. The Chamber acknowledged the infringement of trademark rights, although Trademark Law does not expressly list “use in domain name” among potentially infringing actions, but only among forms of trademark use by the owner.
The Chamber’s decision was based on the similarity of services in the trademark registration (class 35) and those offered at the websites sushi.by and pizza.by to which domain kosht.by redirected, as the services coincided in purpose and use and were meant for the same consumers.
One of the most distinctive features of Belarusian trademark protection concerns registration of a domain name after it has been eliminated from the domain register. In these circumstances a domain name can be registered in the name of a new owner only after a charity auction is conducted by the technical administrator of the national domain zone (since 2012 the technical administrator in Belarus has been “Reliable Software, Inc.”). If nobody is interested in the domain name after 2 auctions, the technical administrator returns it to the register, making it available for registration on general grounds. The first such charity auction commenced in 2012.
The technical administrator has the right not to put domain names identical or confusingly similar to registered trademarks up for auction. These domains can be registered in the name of the trademark owner who proves the exclusive right to the trademark.
By Darya Lando, Head of Legal Department, LexPatent, Minsk
This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.
